Lexpert Special Editions

www.lexpert.ca 21 "If you're in Silicon Valley, one of the first things you think about if you've got a new idea is contacting your patent lawyer, and I don't think Canadian companies have that same mindset." Matthew Zischka SMART & BIGGAR LLP "How do you get the Canadian talent without having the Canadian company to develop it? We need to do a better job in this country of protecting and commercializing our technology." Roch Ripley GOWLING WLG Collaborations and protecting IP Collaborations between academia and in- dustry exist across the country in innova- tion hubs such as entrepreneurship@UBC — the Graham Lee Innovation Centre, VIATEC in Victoria, and, in Toronto, the MaRS Innovation Hub, and the Centre for Entrepreneurship and Creative Destruction Lab at the University of Toronto, as well as the research facilities of the University of Waterloo. ere's a concentration of computer AI-related inventions coming out of the Toronto-Waterloo area, says Zischka, and a belief that the patent system isn't adequate or doesn't apply to some of these ventures. "at's just not the case." Many of these collaborating companies "are well advised to think about the soware and the algorithms that they're creating and discuss those with their patent professional, who can then help them use the Canadian patent office as well as the U.S. patent office to defend, secure and maximize the value of those innovations," he says. Oen, when Canadian companies reach a certain size, they are acquired by larger enti- ties, typically non-Canadian, Zischka adds. Although they are assessed in these transi- tions by having a strong IP portfolio, he says they don't spend enough time and energ y in securing their IP rights and building their portfolios in that early stage. "If you're in Silicon Valley, one of the first things you think about if you've got a new idea is contacting your patent lawyer, and I don't think Canadian companies have that same mindset." Manning advises that companies keep the basics in mind in protecting their IP: 1) plan ahead and have an IP strateg y well in advance of when product is set to go to market; and 2) the need to focus on quality over quantity. In recent years, courts have focused more on patent application errors and that the patent applicant should bear the brunt of those. "Chances are that quick and dirty little patent application, at the end of the day, won't be good enough to provide that solid protection that you're looking for," Manning says. "For startups, oen, their main asset is their IP. at's what they're showing inves- tors, and the success of the exit strateg y for founders will oen be considered. All of that won't go well if a poor job was done in getting the application filed." Although that advice isn't new, it's very relevant today with information on the in- ternet that says typing up a page or two of description and paying $150 to the U.S. Pat- ent Office will protect an invention, he says. "at, in my opinion, is false, unless you're very, very lucky." Wall also notes the importance of clearing and protecting brands at the outset, espe- cially for consumer-facing companies. at's especially important for countries such as China, where protection is based on filing first, he says. And, ultimately, if the compa- ny has longevity, the brand will be its most valuable intellectual property. "We like to talk about patents and trade secrets and really focus on the technolog y, but longer term, the most valuable IP is the whole goodwill of the company, [which] is caught up in the brand, in the trademark." Commercializing assets It has been difficult for enterprises to scale to the level of big tech companies in Canada, says Ripley, making homegrown companies ripe for acquisition and/or foreign ownership. "How do you get the Canadian talent without having the Canadian company to develop it? We need to do a better job in this country of protecting and commercializing our technology," he says. "You look at our GDP per capita and our productivity relative to the Americans, and it's not trending in the right direction. And I think, to a very large degree, it's because we don't do a good job of commercializing intellectual assets, which is really the asset of the 21st century."

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